Appeal No. 2003-1974
Application 09/317,409
claim in fact fails to set out and circumscribe a particular area with a reasonable degree of
precision and particularity. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971).
With respect to 35 U.S.C. § 112, first paragraph, written description requirement, it is
well settled that the examiner has the burden of making out a prima facie case that the appealed
claims do not comply with this section of the statute by setting forth evidence or reasons why, as
a matter of fact, the written description in appellant’s disclosure would not reasonably convey to
persons skilled in this art that appellants were in possession of the invention defined by the
claims, including all of the limitations thereof, at the time the application was filed. See
generally, In re Alton, 76 F.3d 1168, 1175-76, 37 USPQ2d 1578, 1583-84 (Fed. Cir. 1996),
citing In re Wertheim, 541 F.2d 257, 263-64, 191 USPQ 90, 97 (CCPA 1976). A negative
limitation which does not appear in the written description of the specification as filed would
cause the claim to violate the written description requirement of § 112, first paragraph, if it
introduces new concepts. See Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem.,
738 F.2d 453 (Fed. Cir 1984), citing In re Anderson, 471 F.2d 1237, 176 USPQ 331 (CCPA
1973).
The claim language at issue here is the phrase “in the absence of a tiedown ply contacting
the honeycomb core” appearing in the preamble of appealed claim 57. It seem to us from the
plain language of the phrase that one of ordinary skill in this art would find that the “tiedown
ply” intended is one that would “tiedown” the honeycomb core if attached thereto and thus this
claim in fact sets out and circumscribe a particular area with a reasonable degree of precision and
particularity as required by § 112, second paragraph. Indeed, in response to the examiner’s
contentions that one of ordinary skill in this art would not understand the meaning of the phrase
(answer, pages 3 and 8-9), appellants point to tiedown ply 150 in contact with honeycomb core
106 along a chamfer 155 in Corbett (e.g., col. 5, line 49, to col. 6, line 18, and FIG. 6) to support
their argument that one of ordinary skill in this art would have understood the meaning of the
term. Because we agree with appellants’ position, we reverse this ground of rejection.
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